Johnston v. Atlas Mineral Products Co. of Pennsylvania

• Decision Date: 07 February 1944
• Docket Number: No. 9526.,9526.
• Citation: 140 F.2d 282
• Parties: JOHNSTON v. ATLAS MINERAL PRODUCTS CO. OF PENNSYLVANIA.
• Court: U.S. Court of Appeals — Sixth Circuit

140 F.2d 282 (1944)

JOHNSTON v. ATLAS MINERAL PRODUCTS CO. OF PENNSYLVANIA.

No. 9526.

Circuit Court of Appeals, Sixth Circuit.

February 7, 1944.

F. O. Richey, of Cleveland, Ohio (F. O. Richey, H. F. McNenny, J. D. Douglass, and Richey & Watts, all of Cleveland, Ohio, on the brief), for appellant.

George J. Harding, of Philadelphia, Pa. (George J. Harding and Daniel Lowenthal, both of Philadelphia, Pa., and Whittemore, Hulbert & Belknap and Clarence B. Zewadski, all of Detroit, Mich., on the brief), for appellee.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

HICKS, Circuit Judge.

Suit under the Declaratory Judgment Act. Sec. 274d of the Judicial Code, 28 U.S.C.A. § 400.

Appellant, James C. Johnston, was the patentee-owner of Patent No. 1,979,470 for a "Method of Joining Bell and Spigot Pipe Sections." The patent was previously adjudged valid and infringed in a suit by Johnston's licensees against certain users of products manufactured by The Atlas Mineral Products Company of Pennsylvania, appellee here and herein called Atlas. See Universal Sewer Pipe Corp. et al. v. General Constr. Co. et al. D.C., 42 F.Supp. 132. That suit, herein called the Cleveland case, because it was brought there, was defended by Atlas on behalf of the users of its products. Following the decree in that case, Atlas changed one of the materials which it previously sold for use in the method adjudged to infringe.

Nevertheless, Johnston insisted that the manufacture and sale by Atlas of its "Slipjoint G-K" Compound and its "latest Slipjoint G-K Adhesive for preparation and use with slip-joint pipe having preformed collars and liners" contributorily infringed its patent and that their use was a direct infringement thereof, and threatened Atlas with suit. Atlas thereupon brought this suit against Johnston and prayed for a declaratory judgment to the effect that the manufacture and sale of its Slipjoint G-K Compound and Slipjoint G-K Adhesive in connection with the described process did not constitute contributory infringement and that its use in the joining of bell and spigot pipe by sections did not constitute direct infringement. Johnston traversed the allegations of the bill and in a counterclaim alleged that all questions of validity and infringement were res adjudicata and prayed for an injunction and an accounting, etc., against Atlas.

The court did not determine the issue made on the counterclaim and that feature is not before us. On the main issue the court found that the patent claims, two in number, were not infringed by the use of the G-K Slipjoint Compound and the latest G-K Slipjoint Adhesive, and that the sale of these materials did not contributorily infringe, and entered a decree in accordance.

The court denied two preliminary motions made by Johnston, viz. — (1) to stay the proceedings pending the outcome of a suit instituted by him in the District Court for the Northern District of Ohio against the Stillwater Clay Products Company, a customer of Atlas, for infringement of its patent, on the ground that the decision in that case would determine the issues here; and (2) to dismiss the complaint on the ground, among others, that the rights of the parties were capable of determination in the Stillwater suit and therefore there was no "actual controversy" such as would give the court jurisdiction to entertain the present cause.

In its Findings No. 6, the court found that "at the time the complaint herein was filed, the subject matter and the parties were not the same as in the Stillwater suit, and a judgment therein would not settle the questions involved in this suit, and would not be binding upon the plaintiff."

Upon the record as we find it, we are not authorized to go behind this Finding No. 6 and even if it were clear that the parties and subject matter were the same in both suits, it does not necessarily follow that appellee would be relegated to the Stillwater suit. E. W. Bliss & Co. v. Cold Metal Process Co., 6 Cir., 102 Fed.2d 105, 107; Rule 57, Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c.

Atlas having conceded that it is bound by the adjudication of validity in the Cleveland case, we are concerned only with the question of infringement. There are two claims in issue. Typical claim No. 1 follows:

"1. The method of joining bell and spigot pipe sections consisting of molding a collar of soluble joint sealing material about the spigot end of one section, molding a lining band of like material within the bell end of another section within which the collar equipped end of the first section may be fitted, then applying an evaporable solvent to the surfaces of the collar and lining band to render them plastic and subsequently fitting them together to cause said plastic surfaces to unite and congeal incident to evaporation of the solvent therefrom, thereby joining the collar and lining band in a homogeneous seal."

In the Cleveland case the court described the patent as follows 42 F.Supp. 133:

"The patent covers a process for sealing joints of sewer pipe. A collar is placed upon the spigot end of one sewer pipe, and a liner is placed in the bell of the adjoining pipe, both being constructed of soluble material. Such collars and liners are constructed over molds which give them a wedge shape or mutually sloping surfaces so that they can be fitted together, as a cork fits in a bottle. The patented process provides for the treatment of the surfaces of the collar and liner with a solvent just before placing them together. The solvent softens the surfaces and renders them plastic so that upon evaporation of the solvent the collar and liner form a homogeneous seal."

The testimony of Mr. Wirtz, President of Atlas, indicates that after the decision in the Cleveland case, Atlas made no substantial change in the G-K Slipjoint Compound, the material used in precasting the liners and collars upon the pipe sections. The Compound was made up fifty percent of asphalt and fifty percent of a mineral flour, which might be powdered clay or slate flour. Wirtz testified that at the time of the hearing Atlas was using slate flour but whether slate or clay flour was used is immaterial because Johnston expressly states that he makes "no claim to any specific joint forming composition."

Appellant of course wrote his own claims. He wrote into Claim 1 the following element or combination of elements, to wit, the application of "an evaporable solvent to the surfaces of the collar and lining band to render them plastic and subsequently fitting them together to cause said plastic surfaces to unite and congeal incident to evaporation of the solvent therefrom, thereby joining the collar and lining band in a homogeneous seal."

We are not dealing with a basic or generic patent. The specification refers to the invention simply as an improvement in pipe joints. The appellant has clearly limited his claim and he is bound thereby. Fowler v. Detroit Bedding Co., 6 Cir., 47 F.2d 752, and cases there cited. The question here, as we see it, is, whether the adhesive slipjoint G-K 160 now manufactured by Atlas contains elements which constitute "an evaporable solvent" having the effect set forth in that portion of the claim just quoted.

In the Cleveland case, the adhesive was made up fifty percent naphtha, forty-eight and...